Ex Parte Kim et al

Patent Trial and Appeal Board

Aug 23, 2016

12452934 (P.T.A.B. Aug. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/452,934 01129/2010
108197 7590 08/25/2016
Parker Highlander PLLC
1120 South Capital of Texas Highway
Bldg. 1, Suite 200
Austin, TX 78746
FIRST NAMED INVENTOR
Chong Tai Kim
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
YKIM:005US 4701
EXAMINER
YOO, HONG THI
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
08/25/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docket@phiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHONG TAI KIM, CHUL JIN KIM, YONG JIN
CHO, SUNG WOOK CHOI, and AEI JIN CHOI1
Appeal2015-002497
Application 12/452,934
Technology Center 1700
Before: CATHERINE Q. TIMM, CHRISTOPHER L. OGDEN, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 2
1 Appellants identify Korea Food Research Institute as the real party in
interest. App. Br. 3.
2 In our opinion below, we refer to the Specification filed January 29, 2010
("Spec."), the Declaration under 37 C.F.R. § 1.132 of Chong Tai Kim signed
January 24, 2013 ("Kim Deel."), the Final Action mailed November 22,
2013 ("Final Act."), the Appeal Brief filed July 22, 2014 ("App. Br."), and
the Examiner's Answer mailed October 7, 2014 ("Ans.").
Appeal2015-002497
Application 12/452,934
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1
and 3-11. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to nano emulsions comprising capsicum
annum L. essential oil and other components, and methods of production
thereof. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A nano emulsion comprising capsicum annum L. essential
oil of 0.03 to 0.3 wt%, sorbitan fatty acid ester of 0.09 to 1.5
wt%, water soluble biopolymer of 0.05 to 1.0 wt%, and water of
the balance, with respect to the total weight of the nano emulsion,
wherein the ratio of plant essential oil to sorbitan fatty acid ester
ranges from about 1:3 to 1:5 (wt%/wt%), said nano emulsion
having an average emulsion particle size of less than 0.2
micrometers.
App. Br. 15 (Claims App'x).
Gaonkar
Logan et al.
("Logan")
Y aghmur et al.
("Y aghmur")3
REFERENCES
us 5,332,595
us 6,077,559
WO 2005/110370
July 26, 1994
June 20, 2000
Nov. 24, 2005
3 The Examiner cites to US 2007/0213234 Al, stating that it is the English
language equivalent ofYaghmur et al., WO 2005/110370. Appellants have
not objected to the Examiner's reliance on the English language equivalent.
For the sake of clarity, we too cite to the U.S. publication ofYaghmur,
noting that its publication date is November 24, 2005, which qualifies it as
prior art.
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Application 12/452,934
Y aghmur et al.
(hereinafter
"Y aghmur US")
us 2007/0213234
Al
REJECTIONS4
Sep. 13,2007
The claims stand rejected as follows: claims 1 and 3-11 under 35
U.S.C. § 112, first paragraph for lack of written description; claims 1, 3-6,
10 and 11under35 U.S.C. § 103(a) as obvious over Yaghmur in view of
Logan; and each of claims 7, 8, and 9 under 35 U.S.C. § 103(a) as obvious
over Yaghmur in view of Logan and Gaonkar. Final Act., 2-4, 7; App. Br. 5
and 12.
OPINION
Rejection under 35 U.S. C. § 112, first paragraph
The Examiner rejects claims 1 and 3-11 under 35 U.S.C. § 112, first
paragraph as lacking written description support. Final Act. 2. The test for
compliance with the written description requirement is "whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date." Ariad Pharm., Inc. v. Eli Lilly & Co., 597 F.3d 1336, 1351
(Fed. Cir. 2010) (en bane).
The Examiner finds no support in the original disclosure for the
limitation in claims 1, 6, 7, and 8 that recites "said nano emulsion having an
4 In the Answer the Examiner withdrew the rejections of (1) claim 11 under
35 U.S.C. § 112, first paragraph for lack of enablement, and (2) claim 10
under 35 U.S.C. § 112, second paragraph for indefiniteness. Ans. 14.
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Application 12/452,934
average emulsion particle size of less than 0.2 micrometers." Final Act. 2.
The limitation was not part of the original claims, and was added by
amendment. 5
Appellants respond that "microemulsion" is defined in the application
as having particles of 0.2 to 0.5 µmin diameter, and "thus by definition any
nano emulsion according to the present disclosure must be smaller than 0.2
µmin diameter." App. Br. 12-13 (emphasis in original) (citing Spec. 10).
state:
However, the paragraph cited by Appellants and the sentence before it
The nano emulsion has various advantages as compared to an
emulsion or a microemulsion.
The emulsion is opaque and the size of its particle is in the
range of 0.2 to 0.5 µm ... but is thermodynamically unstable,
while the nano emulsion is thermodynamically stable ... and the
size of its particle is in the range of 5 to 100 nm.
Spec. 10 (emphasis added). The above is the only statement in the
application regarding particle size of the nano emulsion. Thus, the claim
limitation to a "nano emulsion having an average emulsion particle size of
less than 0.2 micrometers" is not supported by the original application. We
agree with the Examiner that the application supports a particle size of 5 to
100 nm (0.005 to 0.100 micrometers) for the nano emulsion. See Ans. 3.
Appellants have not convinced us of reversible error in the Examiner's
rejection of claims 1 and 3-11 as lacking written description support.
5 The limitation was added by amendment to the claims on June 14, 2013 in
Appellants' Response to Office Action Dated February 14, 2013.
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Appeal2015-002497
Application 12/452,934
Rejection under 35 U.S.C. § 103(a)
The Examiner rejects claims 1, 3-6, 10, and 11 as obvious over
Yaghmur in view of Logan, and each of claims 7, 8, and 9 as obvious over
the same references in addition to Gaonkar. Final Act. 4, 7. Appellants do
not argue any claim apart from the others. App. Br. 5-6. We select claim 1
as representative to decide the issue of obviousness. "[T]he failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." In re Huai-Hung Kao, 639
F.3d 1057, 1065 (Fed. Cir. 2011) (quoting 37 C.F.R. § 41.37(c)(l)(vii)).
The prima facie case of obviousness
Appellants dispute that the Examiner has made a prima facie case of
obviousness. App. Br. 6. Appellants first suggest that "eight distinct
selections from the expansive teachings of two references are required!" Id.
(emphasis in original). Appellants then cite In re Ruschig, 343 F.2d 965,
974 (CCPA 1965) as stating that "rejection of a species or subgenus in light
of prior art genus ... is not appropriate where the prior art does not disclose
or suggest a small recognizable class of compounds with common
properties," id. at 7 (emphasis in original). The portion of Ruschig cited is
inapposite, however, as it unambiguously discusses anticipation, not
obviousness, and anticipation is not at issue here. Ruschig, 343 F.2d at 974.
Appellants next contend that "there is no guidance in Y aghmur to
make the numerous selections required to arrive at the presently claimed
subject matter." App. Br. 7. But "the [obviousness] analysis need not seek
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Appeal2015-002497
Application 12/452,934
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also Unigene Labs., Inc. v. Apotex, Inc.,
655 F.3d 1352, 1361 (Fed. Cir. 2011) (explaining that the references
collectively, but not necessarily expressly, must guide the skilled artisan to
the claimed invention). The relevant inquiry is whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. In re Keller, 642 F.2d 413,
425 (CCPA 1981) (emphasis added).
The Examiner finds that Y aghmur teaches a nano emulsion
comprising an essential oil, a sorbitan fatty acid ester as a lipophilic additive,
a water soluble biopolymer as an emulsifier, and an aqueous phase. Ans. 5.
Further, the Examiner finds in Yaghmur that the amount of sorbitan fatty
acid ester disclosed (0.5 to 4 wt%) overlaps the range claimed (0.09 to 1.5
wt%), and the amount of water soluble biopolymer disclosed (0.375 wt%)
overlaps the range claimed (0.05 to 1.0 wt%). Id. at 6. The Examiner also
finds that Logan teaches capsicum as an essential oil for use in the range of
0.1 to 5 wt%, which overlaps the amount of capsicum annum L. claimed
(0.03 to 0.3 wt%). 6 Id. at 5-6. Finally, the Examiner finds that modifying
Yaghmur' s composition with Logan's capsicum essential oil discloses a
ratio of plant essential oil (0.1 to 5 wt%) to sorbitan fatty acid ester (0.5 to 4
6 The Examiner finds, and Appellants do not dispute, that it would have been
obvious to one or ordinary skill in the art to choose a species of capsicum
based on what was most readily available and affordable, i.e., capsicum
annum L. in the claims, as this would be considered substitution of one
functional equivalent for another. Ans. 5-6.
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Application 12/452,934
wt%) in the range of 1 :0.1 (5 wt%:0.5 wt%) to 1 :40 (0.1 wt%:4 wt%), which
overlaps the ratio of capsicum (plant essential oil) to sorbitan fatty acid ester
claimed (1:3 to 1:5 (wt%/wt%)). Id. at 7. The Examiner finds that the
combined teachings of Y aghmur and Logan teach all elements of the claims.
We agree.
Appellants contend that Yaghmur cannot be combined with Logan (or
Gaonkar) because Yaghmur deals with nano emulsions, while Logan (and
Gaonkar) deal with microemulsions. App. Br. 7-8. Appellants propose that
the combination would require importing the microemulsion of Logan or
Gaonkar into Yaghmur, rendering the prior art unsatisfactory for its intended
purpose, or improperly picking and choosing only the essential oil teachings
from Logan and Gaonkar. Id. at 8.
In response, the Examiner states that "Logan and Yaghmur are of the
same endeavor of emulsion composition with essential oils as flavorant,"
and it would have been obvious to one of ordinary skill in the art to use
Logan's capsicum in Yaghmur' s composition as a matter of flavoring
preference. Ans. 5.
We agree with the Examiner. "The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference." In re Keller, 642 F.2d at 425. A
determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements. In re Etter, 756
F.2d 852, 859 (Fed. Cir. 1985) (en bane) ("Etter's assertions that Azure
cannot be incorporated in Ambrosio are basically irrelevant, the criterion
being not whether the references could be physically combined but whether
the claimed inventions are rendered obvious by the teachings of the prior art
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Appeal2015-002497
Application 12/452,934
as a whole."). One of ordinary skill in the art at the time of the invention
would not be required to substitute the microemulsion of Logan for the nano
emulsion of Y aghmur. Y aghmur generically teaches nano emulsions and
use of essential oil in such nano emulsions. Yaghmur US iii! 18, 21, 23, 72.
Y aghmur specifically discloses use of R + limonene as an essential oil for
use in the invention. Id. at iJ 72. Logan teaches use of essential oils,
including specifically capsicum, in a microemulsion. Logan col. 2, ln. 28-
35, col. 3, ln. 2. One of ordinary skill in the art at the time of the invention
would have reason to substitute capsicum of Logan into the nano emulsion
of Yaghmur as such would '"simply arrange[] old elements with each
performing the same function it had been known to perform' and yields no
more than one would expect from such an arrangement." KSR, 550 U.S. at
417 (quotes and citation omitted); see also In re Mayne, 104 F.3d 1339,
1340 (Fed. Cir. 1997) ("Because the applicants merely substituted one
element known in the art for a known equivalent, this court affirms [the
rejection for obviousness].").
A preponderance of the evidence supports the Examiner's
determination that one of ordinary skill in the art at the time of the invention
would have arrived at the claimed nano emulsion by substituting capsicum
as taught by Logan into the composition taught by Y aghmur.
The secondary consideration of surprising and unexpected results
When prima facie obviousness has been established, we begin our
consideration anew and consider the obviousness against the evidence of
non-obviousness brought before us, such as the Declaration of co-inventor
Chong Tai Kim and the Specification. See In re Oetiker, 977 F.2d 1443,
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Application 12/452,934
1445 (Fed. Cir. 1992). The burden of rebuttal is shifted to Appellants to
show that the results are unexpected, the comparisons are with the closest
prior art, and the showing is commensurate in scope with the claimed subject
matter. See In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997).
Appellants put forth the Declaration of Chong Tai Kim under 37
C.F.R. § 1.132 as evidence of surprising and unexpected stability and flavor
properties that are not achieved outside of the claimed range. App. Br. 9.
Exhibit A to the declaration is shown below:
-
i
capsicum : Tween 80 . 1 . ( ) I Zeta potential Overall Acceptance Part1c e su:e nm
(mV}
1:1 --·-·~ Slightly a-cceptuble 249 i -17.6
·-
238 ! 1:2 -21.5 Slightly acceptab!5:._ ___
i:s ·- --·-·-1d1·---·-r -35.4 Acceptable
' Unacceptable due to j
1:6 167 I -31.8 I
off-flavor .. ---....... ,_. ·- -- -
I
1:7
I 150
-32.5
Unaccept11ble d.ue to I
I off-flavor --
Exhibit A provides data on particle size, zeta potential, and overall
acceptance for emulsions of capsicum (essential oil) to Tween 80 (a sorbitan
fatty acid ester) in the ratios of 1:1, 1:2, 1:3, 1:6, and 1:7. Kim Deel., Ex. A.
A less negative zeta potential is asserted to indicate instability. Kim Deel. iJ
7. The Specification provides data on particle size of emulsions of oleoresin
capsicum and Tween 80 in ratios of 1 :3, 1 :4, and 1 :5, after heat treatment at
75°C. Spec. 20-21. Results for the zeta potential, flavor, and "overall
acceptance" of emulsions at ratios of capsicum to Tween 80of1 :4 and 1 :5
are not provided in the Specification or the declaration.
The Examiner finds that ratios of 1: 1 and 1 :2 are "acceptable," albeit
"slightly," thus ratios outside the lower end of the claimed range still yield
acceptable results. Ans. 17. The Examiner appears to find "overall
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Application 12/452,934
acceptance" to be related to emulsion stability, although the term is not
defined in the declaration and is not used in the Specification. Id. Results of
testing for "overall acceptance" for the ratios of 1 :4 and 1 :5 are not provided
in either the declaration or Specification. With regard to "overall
acceptance," we agree with the Examiner that Appellants failed to provide a
sufficient number of tests, both inside and outside the claimed range, to
show the criticality of the claimed range on this property. Ans. 17 (citing In
re Hill, 284 F.2d 955 (CCPA 1960)).
The Examiner further notes that the Specification discloses "the
amount of the functional components in the plant essential oil for the
emulsifier becomes too small" at ratios exceeding 1 :5, and contends that
"too small" is unclear and does not support the emulsion being not stable.
Ans. 17-18 (quoting Spec. 14) (emphasis added). (There is no discussion in
the declaration related to "too small" for any ratio of capsicum to Tween
80.) Appellants counter that they "have never argue[d] that nano emulsions
above 1 :5 do not have stability issues." App. Br. 9 (emphasis in original).
While the positions of both the Examiner and Appellants are not crystal
clear, it is apparent that the Specification's statement that "the amount of
functional components in the plant essential oil for the emulsifier becomes
too small" (see Spec. 14) at ratios exceeding 1:5, without more, does not
provide surprising and unexpected results for any property over the claimed
range of ratios of capsicum annum L. to sorbitan fatty acid esters.
Appellants claim nano emulsions comprising "sorbitan fatty acid
esters," but provide data in the Specification and declaration solely on
Tween 80 as a sorbitan fatty acid ester. App. Br. 15 (Claims App'x); Spec.
17, 19-20, Kim Deel. ,-i 7, Exhibit A. Appellants contends that "a skilled
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Application 12/452,934
artisan would recognize that any sorbitan fatty acid ester (e.g., Tween 20, 40,
60) could be used to the same effect as the exemplified Tween 80." App.
Br. 10. In stark contrast, the Specification states that "[i]n the case of Tween
20 or Tween 40, ... [it] is not suitable for producing an oil-in-water type
(O/W) of an emulsion provided in the present invention." Spec. 12
(emphasis added). Appellants therefore do not show surprising and
unexpected results that are commensurate in scope with the claims (which
recite "sorbitan fatty acid esters," not only Tween 80) as required to rebut a
prima facie case of obviousness. See In re Peterson, 315 F.3d 1325, 1329-
31 (Fed. Cir. 2003).
Appellants assert that emulsions with capsicum to Tween 80 ratios
less than 1 :3, i.e. below the low end of the claimed ratio range, lack stability,
pointing to the less negative zeta potential of emulsions with ratios of 1: 1
and 1:2 as compared to 1:3. App. Br. 9-10, Kim Deel. Exhibit A.
Appellants provide no evidence in the declaration that emulsions with ratios
in the claimed range of 1 :3 to 1 :5 are stable. Appellants also assert that
emulsions with capsicum to Tween 80 ratios at 1 :6 and 1 :7 are
"unacceptable due to off-flavor." Id. However, Appellants provide no
evidence in the declaration or Specification that emulsions with ratios below
1 :6 have acceptable flavor. The Examiner finds, and we agree, that
Appellants fail to show that any property they assert is unexpected is
unexpected throughout the claimed ranges, but not outside that critical
range.
While an applicant need not show every property is unexpected, an
applicant must show that whatever property they are asserting is unexpected
is unexpected throughout the claimed range. See Peterson, 315 F.3d at 1330
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Application 12/452,934
(holding claims obvious where applicant failed to show addition of rhenium
resulted in unexpected improvements in alloy strength for entire claimed
range); In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996) (holding claimed
ranges must "produce a new and unexpected result which is different in kind
and not merely in degree from results of the prior art"). Even if Appellants
had shown that a particular test emulsion has just one unexpected property
(with other properties being expected), Appellants have not established that
the other emulsions within the ambit of the claims also have the unexpected
property while the emulsions outside the critical range do not have the
unexpected property.
In addition, "when unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art." In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed.
Cir. 1991); Bristol-Myers Squibb Co. v. Teva Pharm. USA, 752 F.3d 967,
977 (Fed. Cir. 2014) ("to be particularly probative, evidence of unexpected
results must establish that there is a difference between the results obtained
and those of the closest prior art"). Here, Appellant does not attempt to
compare the alleged unexpected results to results obtained from the closest
prior art-Yaghmur. Nor does the Appellant show that any results are, in
fact, unexpected. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) ("[I]t
is not enough to show that results are obtained which differ from those
obtained in the prior art: that difference must be shown to be an unexpected
difference."); Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir.
2007) ("[A ]ny superior property must be unexpected to be considered as
evidence of non-obviousness.").
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Application 12/452,934
After weighing all of the evidence of record, we determine that a
preponderance of the evidence weighs in favor of the Examiner's conclusion
of obviousness.
DECISION
For the above reasons, the Examiner's rejection(s) of claims 1 and 3-
11 are AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
13